Supreme Court ruling expected to increase cassation complaints filed by inventors
In a March 16 2016 decision, in a case brought by an employee-inventor for remuneration for the use of his invention, the Supreme Court held that the admissibility of a cassation complaint (ie, an appeal of last resort) depends on the value of the appeal provided for in labour law matters. According to the Supreme Court, these proceedings should be regarded as those to which a lower threshold for the admissibility of a cassation complaint to the Supreme Court applies – that is, PLN10,000 instead of PLN50,000 – as in standard civil cases.
Given the average level of remuneration for the creators of employee inventions, the decision will facilitate the submission of further cassations to the Supreme Court. Previously, the existing threshold for this type of action to be admissible was often too high in relation to the value of the subject of appeal in these cases, which limited inventors’ ability to claim their rights using this extraordinary remedy.
In general, civil proceedings in Poland include two stages: first and second instance. A decision by a second-instance court is final. However, an extraordinary appeal to the Supreme Court is possible, known as a cassation complaint. The grounds for appeal must be based on an infringement of material law by misinterpretation or improper application, or the infringement of procedural law, if this infringement could have a material influence on the case. The admissibility of a cassation is further limited by the value of the appeal. A cassation is not possible in cases involving property rights where the value of the subject is less than PLN50,000, or less than PLN10,000 in cases concerning labour and social insurance law.
According to existing judicial practice, matters relating to patents and industrial property in general should not be included in employee matters, or even issues relating to the employment law, as the Supreme Court held in a February 23 1993 resolution ((File I PZP 37/92), OSNCP 1993/7-8 /119).
The plaintiff was employed by the defendant company. During his employment, the plaintiff made three inventions and developed a utility model. Both the inventions and the utility model were registered and protected by patents. The defendant company used the plaintiff’s inventions for several years; therefore, the plaintiff demanded that the company pay for using the inventions and the utility model.
The statement of claim was based on industrial property law, not employment law. According to the Industrial Property Act, unless the parties agree otherwise, the creator is entitled to remuneration for exploitation by an economic entity of his or her invention, utility model or industrial design where such entity enjoys the right to exploit it or the right to a patent, the right to protection or the right in registration.
Therefore, the case was recognised by the civil division of the common courts. The first-instance decision, which acknowledged 90% of the plaintiff’s claim, was appealed by both the plaintiff and the defendant. The second-instance court decreased the amount of remuneration granted to the inventor. The plaintiff filed a cassation complaint with the Supreme Court, appealing against part of the second-instance decision. As a result, the value of the appeal amounted to approximately PLN19,000.
A bench of three Supreme Court judges was doubtful as to whether this case for remuneration for use of the invention qualified as a matter of labour law. If not, the value of the appeal would be capped at PLN50,000 and the cassation should be dismissed as inadmissible. For this reason, the three-judge bench put the following legal question to a bench of seven Supreme Court judges: does the appeal value provided for matters of labour law apply to claims by an employee-inventor for remuneration for the use of the invention?
In its March 16 2016 judgment the Supreme Court clarified to a certain degree that in a case brought by the employee-inventor for remuneration for the use of his or her invention, the admissibility of a cassation complaint depends on the value of the appeal provided for labour law matters.
In the oral explanation of the decision (the written decision is not yet available) the Supreme Court clarified that although the inventor's claim for remuneration for use of the invention could not be qualified as resulting from the employment relationship as such based on civil proceedings provisions, due to the similar character of the claim for remuneration of both the inventor and the employee, the case brought by the employee-inventor for remuneration for the use of his invention should be treated as a labour law matter, rather than a standard civil law matter, and the labour law provisions should apply. For this reason, the threshold for admissibility of the cassation complaint should be lowered to PLN10,000.
The Supreme Court also clarified that this rule applies to all categories of inventor, not only to those employed under an employment contract by the entity using the invention.
The Supreme Court's decision has the power of legal principle, which means that it applies to all of the panels of the Supreme Court and the content of the resolution may be changed only by a decision of a full bench of the the Supreme Court after recognition of a new legal issue in this area.
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